Dow Chemical Co. et al. v. NOVA Chemicals Corp., (2016) 487 N.R. 230 (FCA)

• Court: Federal Court of Appeal (Canada)
• Case Date: September 06, 2016
• Jurisdiction: Canada (Federal)
• Citations: (2016), 487 N.R. 230 (FCA);2016 FCA 216

Dow Chemical v. NOVA Chemicals (2016), 487 N.R. 230 (FCA)

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Temp. Cite: [2016] N.R. TBEd. SE.010

NOVA Chemicals Corporation (appellant) v. The Dow Chemical Company, Dow Global Technologies Inc. and Dow Chemical Canada ULC (respondents)

(A-379-14; 2016 FCA 216)

Indexed As: Dow Chemical Co. et al. v. NOVA Chemicals Corp.

Federal Court of Appeal

Webb, Boivin and de Montigny, JJ.A.

September 6, 2016.

Summary:

The plaintiff, The Dow Chemical Company, owned the patent for polyethylene compositions and the films made from such compositions (Canadian Patent No. 2,160,705 (the '705 Patent)). The plaintiff, Dow Chemical Canada ULC manufactured polyethylene copolymers in Canada under license of the '705 Patent and sold polyethylene film-grade copolymers under the name ELITE in Canada. The defendant, NOVA Chemicals Corp. (NOVA) manufactured and sold polyethylene film-grade copolymers under the name SURPASS in Canada. The plaintiffs sued NOVA for patent infringement, seeking to stop NOVA from engaging in the unauthorized and infringing manufacture, distribution, offering for sale, sale and use in Canada of polyethylene compositions, which encompassed the patented technology. NOVA challenged the validity of a number of claims in the '705 patent.

The Federal Court, in a decision reported (2014), 462 F.T.R. 222, held that the impugned claims in the '705 patent were valid and that NOVA had infringed the patent by manufacturing in Canada and distributing, offering for sale, selling or otherwise making available film-grade polymers under the name SURPASS. The plaintiffs were entitled to, inter alia, elect between an accounting or profits or damages to be assessed. In a schedule attached to the court's reasons, the court dealt with evidentiary issues that arose in this case. NOVA appealed respecting all of the trial court's findings of validity and the construction of the patent as well as the corresponding findings of infringement.

The Federal Court of Appeal dismissed the appeal. The court held that the arguments raised by NOVA were no more that mere disagreements with the trial court's factual findings and assessment of expert evidence.

Patents of Invention - Topic 1032

The specification and claims - Construction of a patent - Particular patents - The Federal Court interpreted the claims in Canadian Patent No. 2,160,705 respecting polyethylene compositions, and in particular, the words: "comprising", "heterogeneously branched" and "slope of strain hardening coefficient" - The Federal Court of Appeal dismissed an appeal - See paragraphs 52 to 87.

Patents of Invention - Topic 1130

The specification and claims - The description - Claims for more than what was invented - The plaintiff, The Dow Chemical Company, owned the patent for polyethylene compositions and the films made from such compositions (Canadian Patent No. 2,160,705 (the '705 Patent)) - The plaintiff, Dow Chemical Canada ULC manufactured polyethylene copolymers in Canada under license of the '705 Patent and sold polyethylene film-grade copolymers under the name ELITE in Canada - The defendant, NOVA Chemicals Corporation (NOVA) manufactured and sold polyethylene film-grade copolymers under the name SURPASS in Canada - The Dow plaintiffs sued NOVA, alleging patent infringement - NOVA challenged the patent's validity on the ground that the claims were broader than any invention made as disclosed - The Federal Court held that the patent was not invalid for overbreadth - NOVA appealed - The Federal Court of Appeal dismissed the appeal - See paragraphs 45 to 51.

Patents of Invention - Topic 1589

Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - Particular patents - The plaintiff, The Dow Chemical Company, owned the patent for polyethylene compositions and the films made from such compositions (Canadian Patent No. 2,160,705 (the '705 Patent)) - The plaintiff, Dow Chemical Canada ULC manufactured polyethylene copolymers in Canada under license of the '705 Patent and sold polyethylene film-grade copolymers under the name ELITE in Canada - The defendant, NOVA Chemicals Corporation (NOVA) manufactured and sold polyethylene film-grade copolymers under the name SURPASS in Canada - The Dow plaintiffs sued NOVA, alleging patent infringement - NOVA challenged the validity of the patent on the ground of obviousness - The Federal Court held that the '705 patent was not invalid on this ground - NOVA appealed - The Federal Court of Appeal dismissed the appeal - See paragraphs 38 to 44.

Patents of Invention - Topic 1725

Grounds of invalidity - Lack of utility and operability - Particular patents - The plaintiff, The Dow Chemical Company, owned the patent for polyethylene compositions and the films made from such compositions (Canadian Patent No. 2,160,705 (the '705 Patent)) - The plaintiff, Dow Chemical Canada ULC manufactured polyethylene copolymers in Canada under license of the '705 Patent and sold polyethylene film-grade copolymers under the name ELITE in Canada - The defendant, NOVA Chemicals Corporation (NOVA) manufactured and sold polyethylene film-grade copolymers under the name SURPASS in Canada - The Dow plaintiffs sued NOVA, alleging patent infringement - NOVA challenged the validity of the patent on the ground of lack of utility - The Federal Court held that the patent was not invalid for want of utility - NOVA appealed, arguing that the trial judge erred in deciding there was no promise of synergistic utility - The Federal Court of Appeal dismissed the appeal - It was open to the trial court to find that the inventors did not make an explicit promise of a specific result and the patent did meet the test of a "mere scintilla" of utility - See paragraphs 16 to 37.

Counsel:

Robert MacFarlane, Michael Charles, Andrew McIntosh, Joshua Spicer and Amrita Singh, for the appellant;

Ronald Dimock, Ryan Evans, Steven Garland and Jeremy Want, for the respondents.

Solicitors of Record:

Bereskin & Parr LLP, Toronto, Ontario, for the appellant;

Dimock Stratton LLP, Toronto, Ontario, and Smart & Biggar, Ottawa, Ontario, for the respondents.

This appeal was heard in Toronto, Ontario, on December 7 and 8, 2015, before Webb, Boivin and de Montigny, JJ.A., of the Federal Court of Appeal. The following decision was delivered for the court in Ottawa, Ontario, on September 6, 2016.